MILS Wins Major Intellectual Property Case

30 July 2024

Everyone working in the motor industry will appreciate the crucial importance of effective branding. Purchasing decisions are heavily influenced by a company’s reputation and trademarks are therefore valuable corporate assets which need to be carefully protected.

Whilst it is never fair for a company to take advantage of another’s established reputation, the line between what may be protected and what may not can be unclear and companies with significant reputations can seek to use an established position to their advantage.

What do you do if you are contacted by an established company complaining that your branding is adversely affecting their reputation?

MILS was recently instructed to apply for fifteen trademarks by one of our longstanding clients, major commercial dealers Motus Group. All went well until a difficult trademark dispute arose with Group Lotus Ltd. which claimed under section 5(2)(b) of the Trade Marks Act 1994 that as the marks were only one letter different (Lotus/Motus), and that the goods and services relied on were identical or similar to those services provided by Lotus then the trademark was unfair.

Lotus objected to the trademarks and demanded that the company name was changed to differentiate between the two corporate bodies.

The dispute went all the way to the Intellectual Property Tribunal where the case was heard on 30 August 2023 and where our client won on all counts, so much so that MILS has restricted Group Lotus’ existing trademarks (some of which have been in place since 1957) from protections against all land vehicles to motor cars only.

Lotus chose to appeal this decision and continued to argue that the marks were so similar that members of the public would still confuse the goods and services provided by Motus with those provided by Lotus. After a further hearing we were again successful in defending our client’s position and protecting both their trademarks and their corporate identity.

As the final official judgment has been published, we are now able to report the result. The matter was a significant success for our trademark application advice and litigation service, and testament to the great work conducted particularly by Paul Carroll (Solicitor), our Head of Legal Christopher Baylis (Barrister) and by Daniel Selmi (Barrister).

For further details on the case and the official decisions see below.

23 January 2024 reference is: https://www.ipo.gov.uk/t-challenge-decision-results/t-challenge-decision-results-bl.htm?BL_Number=O%2F0045%2F24&submit=Search+%BB

15 July 2024 reference is: https://www.ipo.gov.uk/t-challenge-decision-results/t-challenge-decision-results-bl.htm?BL_Number=O%2F0668%2F24&submit=Search+%BB